Here’s an interesting article from MIA intellectual property partner, Briffa, about the likelihood of confusion when it comes to trademarks…
Swatch’s opposition to Apple’s IWATCH trade mark application recently reached the High Court, where John Baldwin QC had to decide whether the marks were similar and if there was a likelihood of confusion.
In September 2014, Swatch opposed Apple’s trade mark application for “IWATCH” arguing that its earlier (figurative) trade mark for “ISWATCH” was similar and was registered for similar goods (e.g. it included “horological and chronometric instruments”) and there was a likelihood of confusion between the marks. Apple was applying to protect “IWATCH” as a trade mark for goods including computer software; security devices; monitors and monitoring devices; cameras; computers; computer hardware; computer peripherals; wireless communication devices; radios; audio and video devices; global positioning system devices.
The Hearing Officer found that there was a high degree of similarity between horological and chronometric instruments (e.g. watches) and computers, computer hardware and wireless communication devices (e.g. smart watches) and there was a medium degree of similarity between watches and “monitors and monitoring devices, cameras, radios, audio and video devices and global positioning systems” as these could be used in wearable watch technology. Therefore, Apple’s trade mark could only be protected for “computer software; security devices; computer peripherals”. Apple appealed to the High Court.
The High Court Decision
John Baldwin QC disagreed with there being a high degree of similarity and medium degree of similarity with the goods outlined above and held that there was a low degree of similarity. The incidental fact that smart watches could tell the time should not be enough to prevent someone applying for the general term of, for example, wireless communication devices (i.e. such devices are not limited to only telling the time and may not tell the time). John Baldwin QC added, as an example, that if Apple allowed its smart watch to interact with a burglar alarm system, this would not be enough to mean that there was a high or medium degree of similarity between security devices and watches. As the Hearing Officer’s conclusion as to there being a high/medium degree of similarity was important to the Hearing Officer’s conclusion that there was a likelihood of confusion, Apple’s appeal was successful.
The owner of a trade mark has protection in the territory that it is registered in against a later similar or identical mark used for similar or identical goods and services. Goods and services are grouped into classes and, as explained above, smart watches (or the features making up smart watches) fall within Class 9, whilst watches fall within Class 14. A trade mark being registered in a different class of goods and services does not necessarily mean that the goods and services are not similar or identical. Apple also had tried to register “IWATCH” in Class 14 for watch related goods but this was rejected at the trade mark examination stage, as it was descriptive of the goods or lacked distinctiveness. When applying for a trade mark, try applying for a unique or distinctive name to avoid the issue that it could be found as descriptive of the goods that you are trying to protect the trade mark for. In a separate case, Arcadia Trading opposed Apple’s trade mark application for the goods in Class 9 arguing that “IWATCH” was descriptive of the goods or lacked distinctiveness and Apple was unable to register some of the goods in Class 9.